Asserting Foreign Patent Claims in U.S. Federal Courts: What's Left After Voda v. Cordis?

Abstract:     
Patent law is inherently territorial; a patent covers infringing activity only within the borders of the nation in which it should granted. However, this makes enforcing patent rights worldwide a daunting challenge. Rather than recklessly extending the extraterritorial reach of U.S. patent law, a better alternative would be to assert claims for infringement of multiple foreign patents in a single, U.S. forum.

This paper focuses on the new barriers raised to the prospects for such consolidated, multinational patent infringement proceedings by Voda v. Cordis, decided by the Federal Circuit just this February. Voda held that federal supplemental jurisdiction should almost never exist over foreign patent claims due to "discretionary" considerations of comity, fairness, judicial economy, and convenience. The paper analyzes Voda's erroneous statutory construction of the federal supplemental jurisdiction statute, 28 U.S.C. §1367, which arguably confuses the question of whether there is jurisdiction with the propriety of exercising it. It then explores the limited implications of the decision in light of the availability of federal diversity jurisdiction as an alternative to supplemental jurisdiction. More importantly, this paper also provides a comprehensive response to Voda's ill-informed and narrow treatment of §1367(c)'s discretionary considerations. First, considerations of international comity may in some situations demand adjudication of foreign patent claims - particularly when the needs of the international system and the need to do justice to individual parties are taken into account. Second, since the central obstacle to asserting a foreign patent claim in U.S. court is the difficulty of adjudicating foreign patent validity, an "inter partes" approach to validity provides an adequate workaround to fairness and Act of State concerns.

Rather than waging a losing battle to exclude foreign patent claims from the federal courts, the Federal Circuit would be better off creating guidelines for when foreign patent claims may be properly asserted. Towards this end, this paper situates Voda within the worldwide debate on consolidated patent infringement, and attempts to provides preliminary suggestions for further inquiry - though a comprehensive examination of such guidelines is beyond its scope.

Keywords: Voda v. Cordis, Federal Circuit, comity, territoriality, extraterritoriality, Act of State doctrine, patent law, patent infringement, foreign law, foreign patent law, applying foreign law, federal subject matter jurisdiction, supplemental jurisdiction, transitory cause of action

Working Paper Series